Ex Parte Hegeman et al

Patent Trial and Appeal Board

Jun 19, 2017

12881853 (P.T.A.B. Jun. 19, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/881,853 09/14/2010 Jamin Hegeman P4598US00 1815
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
06/21/2017 EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/21/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMIN HEGEMAN, CARRIE CHAN, DANIEL GAZINEU,
WILSON SILVA PRATA, and RITA PARADA
Appeal 2016-007477
Application 12/881,8531
Technology Center 3600
Before LARRY J. HUME, CARL L. SILVERMAN, and
JOHN D. HAMANN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Nokia Corporation. App. Br. 1.
Appeal 2016-007477
Application 12/881,853
STATEMENT OF THE CASE
The invention relates to monitoring adherence to prescribed medical
treatment regimens utilizing a social network. Abstract. Claim 1,
reproduced below, is exemplary of the subject matter on appeal:
1. A method comprising:
receiving, by a processor, an input for specifying a schedule
associated with a user;
determining, by the processor, to create at least one social
network associated with a plurality of members, the members
including, at least in part, the user and one or more other users,
wherein the one or more other users are each associated with a
respective schedule, and wherein the one or more other users are
determined based, at least in part, on a similarity of the respective
schedule with the schedule associated with the user, a treatment
associated with the user and another treatment associated with the one
or more other users, at least one symptom associated with the user and
at least one other symptom associated the one or more other users, or
a combination thereof;
determining to establish one or more communication sessions
among devices corresponding to at least some of the members based,
at least in part, on the schedule; and
determining a comparison of one or more treatment adherence
rates associated with the respective schedules of the user and the one
or more other users.
App. Br. 23 (Claims Appendix).
THE REJECTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 2-4.
Claims 1—20 stand rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Loncar (US 2008/0238666 Al; pub. Oct. 2, 2008 Al),
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Sandoval et al. (US 2009/0216563 Al; pub. Aug. 27, 2009) (“Sandoval”)
and O’Reilly et al. (US 2011/0009715 Al; Jan. 13, 2011) (“O’Reilly”).
Final Act. 5—19.
ANALYSIS
The §101 rejection
The Examiner finds claims 1 and 11 are directed to the abstract idea
of “determining to establish one or more communication sessions among
devices corresponding to at least some of the members based, at least in part,
on the schedule” by using categories to organize, store, and transmit
information. Final Act. 2. The Examiner additionally finds the claims are
directed to the abstract idea of determining a comparison of one
or more treatment adherence rates associated with the respective
schedules of the user and the one or more other users which is a
long standing and prevalent practice in the healthcare industry
performed by human by or with a computer through
mathematical techniques
and “[t]hus, the claim(s) simply describe the concepts of methods of
organizing human activities and organizing information through
mathematical correlations.” Id. at 3 (emphasis omitted). In these findings,
the Examiner identifies court cases in which concepts similar to the claimed
invention have been found to be abstract. Id. at 2—3 (citing Cyberfone Sys.,
LLC v. CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014);
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950
(Fed. Cir. 2014); Digitech Image Techs, v. Elec. For Imaging, Inc., 758 F.3d
1344 (Fed. Cir. 2014)).
The Examiner further finds the claims do not include additional
elements sufficient to amount to significantly more than the judicial
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exemption. Id. In particular, the “processor” includes a generic computer to
perform generic computer functions. Id. (citing e.g., Spec. ]Hf 30, 69). The
Examiner finds the step of‘“receiving an input specifying a schedule
associated with a user’ represents insignificant extra solution activity such as
mere data gathering.” Id. at 3 (emphasis omitted). The Examiner finds the
step of “determining to create at least one social network associated with a
plurality of members, the members including, at least in part. . .” is
appending well known, routine and conventional activities specified at a
high level of generality. Id. at 3^4 (emphasis omitted).
The Examiner finds:
Considering the additional elements both individually and
as a combination, the claim as a whole does not amount to
significantly more than the abstract idea itself because these
elements merely serve to support the operation of the abstract
idea in a generic, conventional, and insignificant manner.
Further, claims to a system are held ineligible for the same
reason, e.g., the generically-recited computers add nothing of
substance to the underlying abstract idea.
Id. at 4.
Appellants argue the court cases presented by the Examiner, at best,
relate to various aspects of claims 1 and 11 but not all the aspects in
combination because “the instant application is more than a single abstract
method.” App. Br. 6—7. According to Appellants, the Examiner provides
insufficient support for the finding that “these elements merely serve to
support the operation of the abstract idea in a generic, conventional, and
insignificant manner.” Id. at 8. Regarding the “processor,” Appellants
argue it “must have knowledge of very specific data (user treatments,
symptoms, schedules, etc.), analyzing the data for adherence, providing
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communication among users, and creating a social network of users with
related data, all of which cannot simply be done by a generic computer.” Id.
at 9.
In the Answer, the Examiner finds the processor is nothing more than
a programmed computer to perform generic computer instructions and using
it to create a social network for patient support and track adherence does not
impose any meaningful limit on the computer implementation of the abstract
ideas. Ans. 21—22; see also id. at 23—30. The Examiner finds considering
the limitations as an ordered combination adds nothing that is not already
present when looking at the limitations individually and there is no
indication the combination of the limitations improves the functioning of a
computer or improves any other technology. Id.
In Reply, Appellants argue the claimed invention is directed to
improving the computer-related technology of better patient adherence and
monitoring of treatment regimes. Reply Br. 4 (citing Spec, 1, 21—25).
According to Appellants, recent cases and recent USPTO Examiner
Guidelines support a finding that the claims are directed to improving a
computer-related technology and are not directed to an abstract idea. Id. at
3—9 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016);
Memorandum from Robert W. Bahr, Deputy Comm’r for Patents, USPTO to
Patent Examining Corps on Recent Subject Matter Eligibility Decisions
{Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V.
Automotive, LLC) (May 19, 2016), https://www.uspto.gov/sites/default/files/
documents/ieg-may-2016_enfish_memo.pdf).
We are not persuaded by Appellants’ arguments. The Supreme Court
in Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014) reiterated
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the framework set out in Mayo Collaborative Services v. Prometheus
Laboratories Inc., 132 S. Ct. 1289 (2012) for “distinguishing patents that
claim . . . abstract ideas from those that claim patent-eligible applications
from those concepts.” Alice, 134 S. Ct. at 2355. The first step in the
analysis is to determine if the claim is directed toward a patent-ineligible
concept and, if so, the second step is to determine whether there are
additional elements that transform the nature of the claim into a patent
eligible application. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at
1297—98). The second step searches for an inventive concept that is
sufficient to ensure that the patent amounts to significantly more than a
patent on the patent-ineligible concept. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294).
Applying the first step, we agree with the Examiner that the claim is
directed to the identified abstract ideas. In addition, we agree the Examiner
has considered the abstract ideas in the aggregate. Accordingly, we find that
the claim is directed to a patent-ineligible concept.
Having determined that the claim is directed to a patent-ineligible
concept, step 2 of the analysis considers whether the claim contains an
inventive concept such as additional limitations that narrow, confine or
otherwise tie down the claim so that it does not fully cover the abstract idea
itself. See Alice, 134 S. Ct. at 2357. Here, we agree with the Examiner that
no inventive concept is present. Moreover, the hardware features are the
type of generic element that has been determined to be insufficient by the
Supreme Court to transform a patent-ineligible claim into one that is patent-
eligible. See Alice, 134 S. Ct. at 2358. The claim includes no limitations
that prevent it from covering the abstract idea itself.
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In view of the above, we are unpersuaded by Appellants’ argument
that the claims constitute an inventive concept that is significantly more than
a patent on the patent-ineligible concept.
Accordingly, we sustain the 35 U.S.C. § 101 rejection of claim 1. We
also sustain independent claim 11 which is of commensurate scope. We also
sustain the rejection of dependent claims 2—10 and 12—20 as these claims are
not argued separately.
The §103 rejection
Appellants argue the Examiner errs in finding Loncar teaches the
created “social network” recited in claim 1 because Loncar’s health manager
lumps all the patients participating as a single large network which is not
created upon creation of the health manager and is not based on schedules,
treatments, or symptoms. App. Br. 11—13 (citing Loncar || 105—109);
Reply Br. 10-12. According to Appellants, Loncar describes a virtual
support group which is temporary and does not describe how the support
group is created. App. Br.12 (citing Loncar 1109). Appellants further
argue Loncar does not teach “determined, by the processor, to create at least
one social network” because it appears the user, upon searching, must
establish the support group of Loncar. Id. at 13; see also Reply Br. 10-12.
Appellants argue the Examiner errs in finding Loncar teaches the
claim 1 limitation “determining to establish one or more communication
sessions among devices corresponding to at least some of the members
based, at least in part, on the schedule.” App. Br. 13—15; see also Reply 12—
13. According to Appellants, while Loncar teaches the patient may access
the health manager via a mobile device and the mobile device may
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automatically connect the call to the dialed person (e.g., a refill reminder
notification), Loncar relates only to patients calling other persons such as
medical providers. App. Br. 13—15; see also Reply 12—13. In particular,
Appellants argue the Examiner misunderstands the meaning of “members”
which is defined by the remainder of the claim (to be patients) and the
“member cannot be a medical provider.” App. Br. 13—15; see also
Reply 12—13.
We note the terms “social network” and “members” are not defined in
the Specification. Claim terms in a patent application are given the broadest
reasonable interpretation consistent with the specification, as understood by
one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed.
Cir. 2004).
Regarding “at least one social network associated with a plurality of
members,” Appellants present no persuasive evidence that the Foncar health
manager, which includes a plurality of members, does not constitute the
claimed created “social network” as would be understood by one of ordinary
skill in the art.
Regarding “members including, at least in part, the user and one or
more other users,” the Examiner points out that the Specification describes
“the social network (or social networks) may comprise one or more social
network groups, wherein the members of a particular social network group
may include a patient, the patient's family members and/or relatives, other
patients, treatment providers, etc. Ans. 32 (emphasis omitted) (citing Spec.
122); see also Adv. Act. 2.
While subsequent limitations in claim 1 may define the member in
more detail for at least one of the members, we are not persuaded by
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Appellants’ argument that a member cannot be a care provider. Instead, we
agree with the Examiner that, among the plurality of members, a member
can be a patient and a member can be a medical provider. In addition, for
some of the limitations (“wherein the one or more other users are each . . .”),
one member (user) is a patient and another member (user) is a patient.
Applying the above claim interpretations of “social network” and
“members,” the Examiner finds the combination of Loncar, Sandoval, and
O’Reilly teaches the limitations of claim 1. Final Act. 5—9; Adv. Act. 2;
Ans. 30-40.
The Examiner finds Loncar teaches a patient or caregiver (members)
registers with a health manager and provides a health regime including a
medication plan (schedule). Final Act 5 (citing Loncar || 42, 56—58). The
Examiner finds a patient uses the health manager as a social network to
identify others with the same illness and teaches communication among
devices of the members. Id. at 5—6 (citing Loncar || 74, 96, 97, 105—109).
For example, the Examiner finds Loncar teaches communication between a
patient who receives a refill reminder (from a medical provider) based on a
schedule three days before the patient’s medication is exhausted. Id. at 6.
The Examiner finds Sandoval teaches the limitation
wherein the one or more other users are each associated with
a respective schedule, and wherein the one or more other users
are determined based, at least in part, on a similarity of the
respective schedule with the schedule associated with the user, a
treatment associated with the user and another treatment
associated with the one or more other users, at least one symptom
associated with the user and at least one other symptom
associated the one or more other users, or a combination thereof.
Final Act. 7—8.
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In particular, the Examiner finds Sandoval teaches identifying and
creating social connections likely of interest to a user including “physical
profile, medical history, imagery, genetic make-up, allergies which represent
at least one symptom associated with the user and at least one other
symptom associated the one or more other users, and other information.” Id.
(citing Sandoval 114—125); see also Ans. 35—36.
The Examiner relies on O’Reilly for the limitation “determining a
comparison of one or more treatment adherence rates associated with the
respective schedules of the user and the one or more other users.” Final
Act. 8—9 (citing O’Reilly 353—356); see also Ans. 36-40; Adv. Act. 3.
The Examiner finds O’Reilly teaches a social network for health care
management which includes patient information such as adherence rates.
Final Act. 8—9; see also Ans. 36-40; Adv. Act. 3.
The Examiner finds one of ordinary skill in the art would be
motivated to combine the teachings of Loncar, Sandoval, and O’Reilly.
Final Act. 7—9.
We are not persuaded by Appellants’ arguments and agree, instead,
with the findings of the Examiner. Appellants’ arguments are based on
improperly narrow claim interpretations, unreasonably narrow teachings of
the references as would be understood by one of ordinary skill in the art, and
arguments not commensurate with the scope of the claim. Moreover,
Appellants argue the references individually whereas the rejection is based
on the combination.
Appellants present no persuasive argument that the claim terms
should be limited to exclude the combined teaching of the cited references
and present no persuasive argument that the Examiner’s findings and claim
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interpretations are unreasonable or overbroad. Claim terms in a patent
application are given the broadest reasonable interpretation consistent with
the specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d at 1256.
As stated by the Supreme Court, the Examiner’s obviousness rejection
must be based on:
“[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness” .... [Hjowever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSRInt’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” since the skilled artisan is “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 420-21.
On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419-21).
Nor have Appellants provided objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
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In view of the above, we sustain the rejection of claim 1 and
independent claim 11 which recites commensurate limitations and is argued
together with claim 1. See App. Br. 9—19. We also sustain the rejection of
dependent claims 2, 3, 5—10, 12, 13, and 15—20 as these claims are not
separately argued. See id.
We also sustain the rejection of dependent claims 4 and 14 as
Appellants’ argument is conclusory and we agree, instead, with the findings
and legal conclusions of the Examiner. Final Act. 10—12. Therefore, we
sustain the rejection of claims 4 and 14.
DECISION
We affirm the Examiner’s decision rejecting claims 1—20 under 35
U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1—20 under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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